The registration of a domain name identical to the one of an inactive website may constitute infringement

The Court of Florence, with decision no. 2920/2022 of 19th October 2022, expressed itself on unfair competition, re-stating the unity principle of the distinctive signs.

The case concerned a dispute born between two companies operating in the field of shipping and both with signs substantially identical.

In particular, it appeared that the first company was constituted in 2011 and, in 2012, it registered a domain name choosing as name the same wording identifying the company, leaving though the website inactive until 2016. In 2014, this company registered the same sign already used as company name and domain name also as a figurative trademark.

The second company, however, started its business in 2013 – that is a year after the homonymous competitor company – and registered in 2013 the two domain names through which it actively carried out its own e-commerce activities. The only difference between the domain names of the two companies was in the Top Level Domain (TLD): “.com” the one of the first company, “.it” e “.eu” those of the second company.

In brief, the first company asked for the assessment of the unfair competition conduct of the second one, while the latter asked for the declaration of invalidity of the distinctive signs registered by the first one.

As a matter of fact, the second company stated having a non-local prior use of the sign used by both companies because, starting from 2013, its e-commerce activity obtained a high popularity on the market, while in the same period the domain name of the competitor company did not have any visibility, as it was inactive. Therefore, the second company stated that the trademark registered in 2014 by the first one would be invalid for lack of novelty, since the sign was already known on the market for it has been use by the second company the year before and precisely through the contested domain names.

The Court of Florence, however, rejected the requests of the second company.

It was clear, in fact, that the first company had previously registered both the domain name and the trademark, while the effective prior use of the sign, at a non-exclusive local level, was not proven by the second company.

Moreover, the sign at issue already appeared in the company name of the first company, constituted in 2011. In this regard, the Court recalled how, pursuant to art. 22 of the Italian Code of  Industrial Property: “a company is forbidden to adopt a sign identical to or similar with another trade mark, denomination or company name, sign and domain name of a website used in the economic activity or other distinctive sign if, because of the sameness or similarity between the business activity of the owners of the signs and the products or services for which the trademark is adopted, a risk of confusion for the public can be determined, which could consist also in a risk of association among the two signs”.

In the case under the examination of the Court, despite the prior existence of the first company (since 2011) and of the domain name (since 2012), the second company decided to register a domain name (in 2013) and to constitute a company using signs very similar to those used by the first, both as company name and as domain name.

On the basis of these motivations, the Court considered that the infringement activity carried out by the second company at the expenses of the first one was clear, assessing the conducts of unfair competition and the infringement of art. 22 c.i.p. As a consequence, the second company has been forbidden to the adopt the signs already used by the first company, in addition it was ordered to transfer the domain names “.it” and “.eu”, to the latter.


Ilaria Feriti